What to Bring to Your First Patent Attorney Meeting

An initial patent consultation represents your opportunity to discuss your new idea and/or invention with a registered patent attorney. Often, the amount of time dedicated to an initial consultation is limited and set by the patent law firm (often 30 min or one hour). Initial meetings with a South Florida patent lawyer provide a focused opportunity to address how the attorney can best serve your patent needs.

To make good use of this first patent consultation, an inventor should be prepared with the following information and patent documents that should be brought for review by the patent lawyer:

1. Your contact information: An inventor should provide a business card if available or alternatively be prepared to provide appropriate contact information so that the registered patent attorney can follow up after a patent consultation. Such information should include a physical mailing address (either a work address or home address), as well one or more email addresses. In providing an email address, an inventor should make sure that they provide one that they routinely check and monitor.

It is important to not only provide contact information at the start of representation, but also to update contact information throughout the course of representation. This ensures that the patent lawyer can get in contact with the inventor well after a patent application has been filed.

2. A written summary of the invention: While it need not be formal, it is highly recommended for an inventor to prepare a written summary of the invention, how it works, and how it is unique prior to an initial patent consultation. Often this is coined an “invention disclosure statement.” Regardless of the moniker, such writing need not be formal or take any specific form. Moreover, while this is not required prior to attending an initial meeting with a registered patent attorney, it is often very helpful to put pen to paper prior to the patent consultation to help hone the invention and help address gaps in the technology.

3. Information drawings or sketches: In addition to an invention disclosure (as a written summary) it is often encouraged in mechanical inventions and/or consumer products to have some drawings, sketches, illustrations or graphics that help explain the elements and intricacies of the invention. These drawings don’t need to be pretty or elaborate. They can also be hand drawn. Thus, the inventor does not need to rush off to a graphic designer, computer illustrator or draftsman before meeting with a registered patent attorney.

Most patent lawyers have a patent draftsman who can take those informal drawings and prepare them into three dimensional perspective figures. What is needed is a starting point, and that is exactly what informal drawings provide and assist in. Informal drawings also help create a visual aide during an initial consultation with your registered patent attorney.

4. Any patent research conducted: Often, an inventor may have performed some form of patent research prior to scheduling and attending a patent consultation. This may take the form of performing an on-line search as to any mention of the subject matter of the technology, while other writings can be research of scholarly articles such as science journals, medical literature, or perhaps some form of textbook or treatise. Copies of choice portions of these journals, articles and treatise may be helpful in framing for the patent attorney the current status of the art and subject technology.

Remember, a registered patent attorney is focused on the advocacy of patent law rights. While all posses some form of technical or scientific background, they are not always focused on what limited technology during their careers. Accordingly, an initial patent consultation provides the opportunity for the patent lawyer to better understand the technology and to become (re)educated. Providing copies of patent research is a great opportunity to short track the registered patent attorneys understanding of the technology, as well as provide a road map to writing the background section of your patent application.

5. Patent search results: As a related topic to the issue of collecting and providing patent research documents during an initial patent consultation, an inventor often may preform some form of patent search through the search tools available on the US Patent & Trademark Website. Moreover, they may also review patent references available on the World Intellectual Property Organization (WIPO) website. Copies of any references that the inventor believes are important represents a great starting point in determining whether an idea or invention may pass muster during review before the Patent Office. Moreover, this can further provide a starting point for a more formal patent search conducted by the patent attorney. Even if copies of these references are not provided, providing a list of patent references sufficient to locate those patents or published patent applications is highly encouraged.

6. Copies of any prior provisional patent applications filed: While rare, there are circumstances where an inventor previously filed for a provisional patent application without assistance of counsel. In such scenario there is only a finite amount of time to convert such a provisional filing into a utility patent application before there is a risk of abandonment of priority. Therefore, it is important to provide a registered patent attorney with a copy of the filing receipt, copy of the application, and any information regarding that filing (including the date of filing).